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[email protected] Paper 53 Tel: 571–272–7822 Entered: August 12, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE _______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
COMMSCOPE TECHNOLOGIES LLC, Petitioner,
v.
DALI WIRELESS INC., Patent Owner.
_______________
Case IPR2018-00571 Patent 9,531,473 B2 _______________
Before KARL D. EASTHOM, MELISSA A. HAAPALA, and SHARON FENICK, Administrative Patent Judges. FENICK, Administrative Patent Judge.
FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
In this inter partes review, CommScope Technologies LLC
(“Petitioner”) challenges the patentability of claims 6–21 of U.S. Patent No.
9,531,473 B2 (Ex. 1001, “the ’473 patent”), which was assigned to Dali
Wireless Inc. (“Patent Owner”).
We have jurisdiction under 35 U.S.C. § 6(b)(4). This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
arguments raised during this inter partes review. For the reasons discussed
below, we determine Petitioner has proven by a preponderance of the
evidence that the challenged claims of the ’473 patent are unpatentable. See
35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter,
the petitioner shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.”).
A. Procedural History
On February 2, 2018, Petitioner requested inter partes review of
claims 6–21 of the ’473 patent. Paper 1 (“Pet.”). Patent Owner filed a
Preliminary Response. Paper 19 (“Prelim. Resp.”). On August 14, 2018,
based on the record before us, we instituted an inter partes review. Paper 26
(“Institution Decision” or “Inst. Dec.”).
Our review encompasses all grounds asserted in the Petition, viz.:
Reference(s) Basis Claims Challenged Sabat1 § 102(b) 6–14, 16, 18
1 Sabat et al., U.S. Patent Application Pub. No. 2009/0180426 A1, pub. July 16, 2009 (Ex. 1008).
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Reference(s) Basis Claims Challenged Sabat and any of CPRI Spec.2, Wu3, Stratford4, Bauman5, Kummetz6, or Schwartz27 (“the Daisy-Chain References”)
§ 103 15, 17, and 19–21
Sabat and Wu, or Sabat and Wu and any of the Daisy-Chain References
§ 103 6–21
Oh8 § 102(b) 6, 7, 11, 12, and 19 Oh and the “Standard Reference Books”9 § 103 8, 13 Oh or Oh and Feder10 § 103 18 Oh and Feder § 103 20 Oh and Sabat § 103 9, 10, 14, 16 Oh and Bauman and/or Feder § 103 2111 Oh, Sabat, and Bauman and/or Feder § 103 15, 17
2 CPRI Specification V 4.0 (2008-06-30) Interface Specification (Ex. 1010). 3 Wu et al., U.S. Patent Application Pub. No. 2010/0128676 A1, pub. May 27, 2010 (Ex. 1011). 4 Stratford et al., U.S. Patent No. 6,785,558 B1, iss. Aug. 31, 2004 (Ex. 1015). 5 Bauman et al., U.S. Patent No. 8,958,789 B2, iss. Feb. 17, 2015 (Ex. 1009). 6 Kummetz et al., U.S. Patent No. 8,346,091 B2, iss. Jan. 1, 2013 (Ex. 1013). 7 Schwartz et al., U.S. Patent No. 6,801,767 B1, iss. Oct. 5, 2004 (Ex. 1018). 8 Oh et al., U.S. Patent No. 7,286,507 B1, iss. Oct. 23, 2007 (Ex. 1005). 9 Petitioner defines “Standard Reference Books” to include three books, and provides front and back matter and selected pages as Exhibits as follows: Charles E. Spurgeon, Ethernet The Definitive Guide 99, 101–201 (O’Reilly & Associates, Inc., 2000) (Ex. 1028); Ray Horak, Telecommunications and Data Communications Handbook 353–366, 375–385, 394–397 (John Wiley & Sons, Inc. 2007) (Ex. 1027); and Network Design Basics for Cabling Professionals 41–67, 69–117, 119–134, 315–327 (Ex. 1007). 10 Feder et al., U.S. Patent Application Pub. No. 2005/0157675 A1, pub. July 21, 2005 (Ex. 1006). 11 The grounds chart in the Petition indicates claim 15 is challenged based on a different combination, but the Petition provides arguments relating to the combination of Oh, Sabat, and Bauman and/or Feder, as reflected in the next line of this chart. See Pet. 9, 73–75; Paper 36 (“Pet. Reply”), 19–20.
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Reference(s) Basis Claims Challenged Wu § 102(e) 6–8, 11–13, 18–21 Wu § 103 6–21 Wu and Sabat § 103 9, 10, 14–17
Petitioner also relies on the declaration of Dr. Anthony Acampora, Ex.
1003.
Patent Owner filed a Patent Owner Response (Paper 32, “PO Resp.”)
and Petitioner filed a Reply (Paper 36, “Pet. Reply”). Patent Owner also
filed a Sur-Reply (Paper 40, “PO Sur-Reply”). Patent Owner also relies on
the declaration of Dr. Bim, Ex. 2007. Oral Argument occurred on April 4,
2019, and a transcript of that hearing is of record. Paper 52 (“Tr.”).
Papers filed regarding a Motion to Exclude are addressed infra at
Section II.G.
B. Related Matter
The parties state that the ’473 patent has been asserted against
Petitioner in the following district court case: CommScope Technologies
LLC v. Dali Wireless, Inc., No. 3:16-cv-00477-B (N.D. Tex.). Pet. 1; Paper
4, 2.
C. The ’473 Patent
The ’473 patent is titled “Remotely Reconfigurable Distributed
Antenna System and Methods” and relates to a Distributed Antenna System
(DAS) that “enables a high degree of flexibility to manage, control, enhance,
[and] facilitate the usage and performance of a distributed wireless
network.” Ex. 1001, [54], [57]. According to one embodiment of the
invention, a distributed antenna system includes digital access units (DAUs),
which each connect to a base station. Id. at 6:1–10. The distributed antenna
system receives downlink data via radio frequency (RF) signals from the
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base station. Id. at 6:25–32. The DAUs provide the received signals to
multiple remote radio head units (RRUs). Id. at 6:14–17. Figure 1 of the
’473 patent, reproduced below, is a block diagram showing the basic
structure and an example of a downlink transport scenario.
Figure 1 depicts two DAUs, DAU1 101 and DAU 102, which provide
signals to RRUs, RRU1 103 through RRU4 106. Id. at 5:36–39, 6:1–7:18.
Some RRUs, e.g., RRU2 104 shown in Figure 1, connect to a DAU via
“daisy chaining” through intermediary RRUs, e.g., RRU1 103. Id. at 7:53–
56.
As shown in Figure 1, DAU1 101 receives composite downlink signal
107 from a first base station (not shown) comprised of carriers 1 through 4,
and DAU2 102 receives composite downlink signal 108 from a second base
station (not shown) comprised of carriers 5 through 8. Id. at 6:25–32.
Bidirectional optical cable 113 connects DAU1 101 and DAU2 102,
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rendering carriers 1–8 available to each DAU. Id. at 6:38–44. Software
settings within RRU1 103 through RRU4 106 control which carrier signals
are present in the downlink output signal at the antenna port of the RRUs.
Id. at 6:44–47, 6:56–59, 6:66–7:2, 7:9–12. Embedded software control
modules in the DAUs and the RRUs aid in “determining and/or setting the
appropriate amount of radio resources . . . assigned to a particular RRU or
group of RRUs to meet desired capacity and throughput objectives.” Id. at
11:41–63. The antenna ports of the RRUs receive uplink signals and
transmit them to the base station via the DAUs. Id. at 6:17–22, 8:65–9:5,
9:47–49.
D. Illustrative Claim
Claims 6 and 11 of the challenged claims of the ’473 patent are
independent. Claim 11 illustrates the claimed subject matter:
11. A system for transporting wireless communications, comprising:
a host unit; a plurality of remote units, including at least a first remote
unit and a second remote unit; wherein the host unit comprises at least one interface to
communicatively couple the host unit to at least one signal source;
wherein the host unit is capable of receiving a plurality of downlink signals from the at least one signal source;
wherein the host unit further comprises at least one interface to communicatively couple the host unit to the plurality of remote units;
wherein the host unit is capable of sending a digital representation of any downlink signal it receives to any of the plurality of remote units;
wherein the host unit is configurable to transmit a digital representation of a first subset of the plurality of downlink signals to the first remote unit and a digital representation of a
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second subset of the plurality of downlink signals to the second remote unit, the second subset being different than the first subset;
wherein the host unit is capable of receiving a digital representation of at least one uplink signal from the each of the plurality of remote units.
Ex. 1001, 13:53–14:21.
II. ANALYSIS
A. Principles of Law
It is a petitioner’s burden to demonstrate unpatentability in an inter
partes review. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)).
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
However, this is not an ipsissimis verbis test, i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on the following
underlying factual determinations: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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i.e., secondary considerations.12 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
employ mere conclusory statements. The petitioner must instead articulate
specific reasoning, based on evidence of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the
principles stated above in mind.
B. Level of Ordinary Skill in the Art
Petitioner asserts that the proper level of ordinary skill in the art is a
“bachelor’s degree in electrical engineering (or equivalent field) with 2-3
years of work experience in wireless communications.” Pet. 12 (citing Ex.
1003 ¶ 20). Patent Owner contends that the proper level of skill is that of a
person who “would have had a bachelor’s degree in computer science,
computer engineering, electrical engineering, or their equivalent, and at least
three years’ experience working with wireless technology.” PO Resp. 17
(citing Ex. 2007 ¶ 17). Based on the evidence of record, including the types
of problems and solutions described in the ’473 patent and the asserted prior
art, we agree with and adopt Patent Owner’s definition of the level of
ordinary skill in the art, although our findings and conclusions would be the
same if we applied Petitioner’s somewhat narrower proposed definition.
C. Claim Construction
In an inter partes review filed before November 13, 2018, the Board
interprets claims of an unexpired patent using the broadest reasonable
12 The record contains no allegations or evidence of secondary considerations.
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construction in light of the specification of the patent. See 37 C.F.R.
§ 42.100(b) (2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2144–46 (2016) (upholding the use of the broadest reasonable interpretation
standard as the claim interpretation standard to be applied in an inter partes
review); Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51340 (Oct. 11, 2018) (noting that the changes apply to inter
partes reviews filed on or after November 13, 2018). Under that standard,
and absent any special definitions, claim terms generally carry their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art, at the time of the invention. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must
be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Regardless of the standard
employed, nothing in this record indicates that a district court claim
construction standard would alter the outcome here.
Petitioner requests that we construe “packetizing.” Pet. 12. Patent
Owner presents arguments regarding “packetizing,” and additionally argues
for constructions of the terms “downlink signal,” “wherein the host unit is
capable of sending a digital representation of any downlink signal it receives
to any of the plurality of remote units,” and “configurable to.” PO Resp. 6–
17.
1. “packetizing”
Petitioner argues that the broadest reasonable construction for
“packetizing,” which appears in claims 9, 10, 14, and 16 is “making units of
data which are sent over a network.” Pet. 12. In the Institution Decision, we
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declined to construe “packetizing” but invited the parties to provide briefing
on this issue. Inst. Dec. 9–10.
Patent Owner argues that the Specification of the ’473 patent
describes data packets as including headers that identify source or
destination information, and thus argues that any construction should require
“including source or destination information with the data to be transmitted.”
PO Resp. 14–15 (citing Ex. 1001, 8:41–47, 9:10–13); Tr. 26:17–27:4
(clarifying that Patent Owner’s position is that the construction should
require, rather than simply “encompass,” the inclusion of source or
destination information).
Petitioner presents definitions of packetizing from various technical
dictionaries to show that a packet is “a unit of data which is sent over a
network,” and argues that “packetizing” should be construed as creating
(“making”) such packets. Pet. 12. (quoting Ex. 1022, 4; citing Ex. 1023–
25). Patent Owner argues Petitioner’s proposed construction is based only
on extrinsic evidence and ignores the balance of the quoted definition used
as the basis of Petitioner’s claim construction, which describes a packet as
“compris[ing] a payload containing some data, and either a header or a
trailer containing control information.” Ex. 1022, 4 (cited in PO Resp. 16);
PO Resp. 15–16. Petitioner responds that while the definition used does
refer to control information, “there is nothing in the definition that refers to
control information being source or destination information” and other
control information could be included rather than source or destination
information. Pet. Reply 6. Petitioner, however, does not describe how any
form of control information is included in Petitioner’s proposed definition.
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Turning to intrinsic evidence, Patent Owner argues that the
Specification describes the transmission of headers with data packets, for
uplink signals identifying the source of the packet, and for downlink signals
identifying destination information. PO Resp. 14–15 (citing Ex. 1001, 8:41–
47, 9:10–13; Ex. 2007 ¶¶ 39, 41–42). Patent Owner cites a localization
capability described in the Specification, and notes that without the inclusion
of source information in uplink data, that localization capability would be
“frustrated.” Id. at 15 (citing Ex. 1001, 4:55–66; Ex. 2007 ¶¶ 40–41).
Petitioner argues in response that this localization capability is not claimed
or referred to in the challenged claims. Pet. Reply 6.
Petitioner quotes originally filed claim 3 in the application which
became the ’473 patent, which describes “I/Q mapping and framing the
digitized [downlink] signals . . . to provide packetized signals” and a
dependent claim that further specifies that “the packetized signals each
include a destination address.” Pet. Reply 4–5 (quoting Ex. 1002, 431–432).
Thus, Petitioner argues, claim differentiation requires “that the packetizing
called out in independent application claim 3 did not require a destination
address.” Id. at 5.
Patent Owner’s analysis is persuasive and supported by the
Specification. The Specification states “[h]eader information is transmitted
along with the data packet which identifies the RRU and DAU that
corresponds to the individual data packet.” Ex. 1001, 9:10–13. Patent
Owner explains “[b]y providing the identities of both the DAU and the
RRU, the header may be used to identify a region in which a particular user
is located.” PO Resp. 14–15 (citing Ex. 2007 ¶ 41). The Specification
further describes that the “system of the invention uses this header
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information in conjunction with the mobile user’s radio signature to localize
the user to a particular cell.” Ex. 1001, 4:55–66.
We agree with Patent Owner that the Specification describes adding
header information to framed data to identify the source of the packet for an
uplink signal and aid in localization. PO Resp. at 15 (citing Ex. 1001, 4:55–
66; Ex. 2007 ¶¶ 40–41). The Specification mentions the inclusion of source
information as a general requirement, describing that if Common Public
Radio Interface (CPRI) is not used to frame packets, another standard can be
used provided that standard “uniquely identif[ies] data packets with
respective RRUs.” Ex. 1001, 9:8–10. Petitioner’s claim differentiation
argument is not persuasive, as the cancelled dependent claim specifies the
inclusion of a destination address, which does not preclude a source address
or destination address being required in the claim from which it depended.
See PO Sur-Reply 9. We are more persuaded by Patent Owner’s intrinsic
evidence than by the extrinsic evidence cited by Petitioner.
After consideration of the entire record, we agree that the broadest
reasonable construction in light of the Specification of “packetizing” a signal
requires the inclusion of source or destination information.
2. “wherein the host unit is capable of sending a digital representation of any downlink signal it receives
to any of the plurality of remote units”
Patent Owner argues that broadest reasonable interpretation of the
“wherein the host unit is capable of sending a digital representation of any
downlink signal it receives to any of the plurality of remote units” limitation
in claims 6 and 11 is “wherein the host unit is capable of sending a digital
representation of a specific downlink signal it receives to a specific one of
the plurality of remote units.” PO Resp. 10–11. Patent Owner argues that
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this is because “one of skill in the art would understand from the claim
language and the specification that the host unit must be able to extract
specific radio resources from composite signals received from a signal
source and specify precisely where to send each individual radio resource.”
Id. (citing Ex. 2007 ¶¶ 51–52). Petitioner contends that no portion of the
Specification requires the extraction of any portion of the plurality of
downlink signals or individual transmission to remote units, and on the
contrary, the Specification describes all downlink signals arriving at each
remote unit, where digital upconverters in the remote units select which
signals to turn on and off for broadcast. Pet. Reply 2–3 (citing Ex. 1001,
6:61–65).
Patent Owner makes clear in other arguments that it interprets its
proposed construction as requiring the host unit to be capable of sending a
digital representation of a specific downlink signal to only one remote unit
without sending it to any other remote units. See PO Resp. 54–57; PO Sur-
Reply 22–23; Tr. 53:16–60:25. Patent Owner cites the declaration of its
expert, Dr. Bim, in which Dr. Bim cites the “fine-grained ability to send
specific radio resources to specific remote units” of the ’473 patent as
providing “precise control over which radio resources are allocated where
and also enables more efficient use of bandwidth between a host unit and its
remotes.” Ex. 2007 ¶ 51 (cited at PO Resp. 10–11, PO Sur-Reply 3).
We are not persuaded that the claim language at issue requires the
host unit to be capable of sending a specific downlink signal to a specific
(one) resource (i.e., the claim does not require extracting a specific downlink
signal to send to only a specific resource.) The ’473 patent specifically
discloses that remote units use upconverters to determine which radio
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resources to broadcast from among the resources received––so a host unit
need not differentiate the carriers it sends to specific remote units because
the latter can control the uplink resources. Ex. 1001, 6:44–7:12, 11:56–63
(describing carriers 1, 4, 5, and 8 arriving at RRU4 from RRU3). Therefore,
we decline to adopt Patent Owner’s claim construction. Other than
declining to adopt Patent Owner’s construction, we agree with Petitioner that
we do not need to explicitly construe this claim term.
3. “downlink signal”
Patent Owner argues that the broadest reasonable interpretation of the
term “downlink signal” is “radio resource,” and that “radio resources may
be, for example, ‘RF carriers, CDMA codes, or TDMA time slots.’” PO
Resp. 6–7 (quoting Ex. 1001, 4:10–12). Patent Owner notes that the ’473
patent describes the receipt of groups of radio resources in composite signals
from base stations, and that each radio resource is treated individually. Id. at
7–8. Patent Owner does not make clear, other than be providing three
examples from the ’473 patent, what a radio resource is; instead Patent
Owner contrasts its construction with a construction that encompasses
composite signals such as the composite signal sent by the base stations in
the ’473 patent. Id. at 9; Ex. 1001, 6:25–28 (cited at PO Resp. 7). Patent
Owner uses its construction to distinguish the host unit teachings of Sabat
(which it asserts “is not able to extract radio resources from incoming base
station sector signals”) and of Oh (which it asserts “sends an entire coverage
area to an antenna unit”) from those in the challenged claims. PO Resp. 30–
32, 44–45.
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For the purposes of this decision, which does not rely on these
teachings of Sabat and Oh, no construction is deemed necessary. Vivid
Techs., 200 F.3d at 803.
4. “configurable to transmit a digital representation of a first subset of the plurality of downlink signals to the first remote unit and a digital
representation of a second subset of the plurality of downlink signals to the second remote unit, the second subset being different than the first subset”
Patent Owner argues that the “configurable to . . .” claim limitation
does not state an intended use, but rather should be interpreted to be a
limitation of the invention. PO Resp. 11–14. Patent Owner additionally
notes that the District Court found that the claim term did not state an
intended use. Id. at 12–13; Ex. 2005, 26–28. Petitioner does not present any
construction for this term.
Patent Owner persuasively argues that the configurability
encompassed in this limitation is a key functionality of the system, and that
it is not merely context in which the invention may be used. PO Resp. 11–
14. We do not construe the “configurable to” limitation as a statement of
intended use.
D. Asserted Anticipation Based on Wu and Asserted Obviousness Based on Wu
Petitioner asserts claims 6–8, 11–13, and 18–21 are anticipated by
Wu. Pet. 75–88. Additionally, Petitioner asserts claims 6–21 would have
been obvious over Wu. Id. at 89–90. Patent Owner addresses these
assertions in Patent Owner’s Response. PO Resp. 21, 54–59.
1. Overview of Wu
Wu is titled “Carrier Channel Distribution System” and describes a
system where signals are communicated between base transceiver stations
and remote transceiver units (RTUs), providing fine-grained control for this
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communication, splitting carrier channels and routing only some channels to
RTUs according to a routing policy. Ex. 1011, [54], [57], ¶¶ 9, 11, 38–44.
The base transceiver station may receive signals within a plurality of
frequency bands, each of which may comprise multiple channels. Id. ¶¶ 11,
35, 37, 38. Figure 2 of Wu, reproduced below, is a schematic of a base
transceiver station and associated host units.
Figure 2 shows base transceiver station (BTS) 240 including
transceiver 260, matrix switch 250, and host units 230. Id. ¶¶ 15, 34–36.
Transceiver 260 receives signals on BTS bands 263A through 264N, and
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each may include multiple channels 270, e.g., channels 270 labelled 5
through 9 in BTS band 263B. Id. ¶¶ 35, 37. Transceiver 260 forwards the
received channels 270 to matrix switch 250 that routes them according to
Routing Policy 255 to host unit 230, which further distributes them to RTUs
over link 215. Id. ¶ 38. The system is bi-directional, and carrier channel
signals are received by host units 230 from RTUs and forwarded to
transceiver 260 for transmission within bands 263. Id. ¶¶ 36, 49. Wu also
discloses that some signals may be received at an RTU with another RTU
acting as intermediary. Id. at Figs. 1, 4, ¶¶ 33, 51.
Policy 255 can be reconfigured in order to change the routing of
channels to the various RTUs. Id. ¶¶ 48, 49. Channels may be routed,
allocated, or distributed, for example, based on anticipated requirements of
areas at a certain time of day, or on current traffic load. Id. ¶¶ 43, 44.
Transmissions between host units and RTUs are disclosed as preferably
being according to the CPRI Standard. Id. ¶¶ 31, 49.
2. Claims 6 and 11
a. Petitioner’s Initial Showing – Claim 11
Petitioner persuasively shows that Wu discloses claim 11’s preamble
“system for transporting wireless communications.” Pet. 78 (citing Ex. 1011
¶¶ 2, 4, 5, 9). With respect to the host unit of claim 11, Petitioner argues that
a combination of Wu’s matrix switch 250 and host units 230 disclose the
claimed host unit. Id. (citing Ex. 1011, Fig. 2, elements 250, 230). To
explain the alleged disclosure of the claimed host unit in Wu, Petitioner
presents an annotated version of Wu’s Figure 2, reproduced below.
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Id. at 77. Figure 2, as annotated by Petitioner, shows a dotted red box
enclosing Wu’s matrix switch 250 and Wu’s host units 230.
Petitioner persuasively shows that Wu’s description of multiband
transceiver 260 discloses the signal source of claim 11. Id. at 79. Petitioner
also persuasively shows that Wu’s description of RTUs discloses the
claimed plurality of remote units. Id. (citing Ex. 1011, Fig. 1, ¶¶ 11, 30, 33).
With respect to the claim limitations requiring that “the host unit
comprises at least one interface to communicatively couple the host unit to”
the signal source and “the host unit is capable of receiving a plurality of
downlink signals from” the signal source, Petitioner persuasively relies on
the matrix switch 250 of Wu, which communicatively couples to the multi-
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band transceiver (signal source) and is capable of receiving a plurality of
downlink signals from that transceiver. Id. at 79–80 (citing Ex. 1011, Fig. 2,
¶ 38).
Petitioner persuasively shows that Wu’s description of host unit 230’s
connections with RTUs discloses the limitation regarding an interface of the
host unit to communicatively couple to the remote units. Id. at 80 (citing Ex.
1011 ¶¶ 30, 51).
With respect to the host unit capability to send a digital representation
of downlink signals to any of the plurality of remote units, Petitioner
persuasively relies on Wu’s disclosures of a matrix switch, which provides
fine-grained control over individual carrier channels by routing them,
according to a routing policy, including routing each channel individually to
one or more RTUs. Id. at 80–81 (citing Ex. 1011 ¶¶ 9, 11, 30, 38–47, 54).
Petitioner addresses the host unit’s configurability to transmit a first subset
of a plurality of downlink signals to a first remote unit and a second subset
to a second remote unit by referencing back to these citations, and Petitioner
further notes a specific example provided in Wu in which the system routes
a first carrier channel to one RTU and a second carrier channel to a second
RTU. Id. at 82–83 (quoting Ex. 1011 ¶ 47).
Lastly, with respect to claim 11, Petitioner persuasively argues that
Wu discloses bi-directional digital communication between the RTUs and
the host unit and explains how this and related descriptions disclose the
claimed capability of the host unit to receive at least one uplink signal from
each RTU. Id. at 83 (citing Ex. 1011 ¶¶ 36, 56).
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b. Analysis of Parties’ Positions – Claim 11
In response to the Petition and Institution Decision, Patent Owner
presents two arguments relating to Petitioner’s contentions regarding Wu
and claim 11. PO Resp. 54–58. First, Patent Owner argues that Wu does
not disclose a host unit “capable of sending a digital representation of any
downlink signal it receives to any of the plurality of remote units” (the
“capable of sending” limitation) as required by claim 11. Id. at 54–57; PO
Sur-Reply 22. Second, Patent Owner argues that Wu does not disclose a
host unit “configurable to transmit a digital representation of a first subset of
the plurality of downlink signals to the first remote unit and a digital
representation of a second subset of the plurality of downlink signals to the
second remote unit, the second subset being different from the first subset”
(the “configurable to transmit” limitation) as further required by claim 11.
PO Resp. 57–58; PO Sur-Reply 23.
(1) Wu’s host units 230 and matrix switch 250
At least in part, each of these arguments relies on Patent Owner’s
contention that Wu’s host units (e.g. shown as elements 230 in Wu’s Figure
2) do not have the capability or configurability required by the “capable of
sending” limitation or the “configurable to transmit” limitation. PO Resp.
54–58. For example, with respect to the “capable of sending” limitation,
Patent Owner argues that Wu’s matrix switch receives composite signals and
distributes them to the Wu host units, but that the Wu “host units themselves
do not perform any switching or routing of signals.” Id. at 55. As detailed
above, however, Petitioner relies on the combination of Wu’s matrix switch
250 and host units 230 as reading on the host unit of claim 11. Pet. 78.
IPR2018-00571 Patent 9,531,473 B2
21
The claim does not require a unitary structure for the host unit, and
Patent Owner does not advance any specific basis to distinguish the claimed
host unit from Wu’s matrix switch 250 and host units 230 considered
together. Patent Owner argues a failure to show obviousness, as follows:
When showing a high level view of its system, Wu groups its multi-band transceiver and matrix switch in BTS 140, while leaving its host units 130 as separate entities. Ex. 2007, ¶147; [Ex. 1011], Fig. 1. Figure 2 similarly illustrates the multi-band transceiver 260 and the matrix switch 250 as the BTS 240, while leaving the host units 230 as distinct components. Ex. 2007, ¶147; [Ex. 1011], Fig. 2. The correct way to group Wu’s components, if grouping were desirable, would be to group the hosts with their respective RTUs to form multiple DASes, and to group the multiband transceiver 260 and the matrix switch 250 to form a BTS 240. Ex. 2007, ¶147. Because a conventional DAS is made up of a host unit and one or more remote antennas, a POSITA considering Wu would view its functional groupings just as Wu itself depicts its system in Figure 1 [of Wu]: a BTS 140 connected to multiple DASes via the multiple host units 130. Ex. 2007, ¶148. Petitioner’s proposed groupings are, therefore, incorrect, and clearly motivated by a hindsight need to find elements of the ’473 Patent’s claims in the Wu reference. Id. at ¶¶148, 163–164.
PO Resp. 55–56. However, we have before us both an anticipation and an
obvious ground relating to the unpatentability of claim 11 over Wu. We are
persuaded that Wu discloses the claimed host unit as a combination of the
matrix switch and host units. Identity of terminology is not required for
anticipation. In re Bond, 910 F.2d at 832. Patent Owner does not argue a
difference––structural, functional, or otherwise––between the identified
elements from Wu and the claimed host unit, but merely that multiple
elements are identified as corresponding to the host unit. In re Gleave, 560
F.3d 1331, 1334 (Fed. Cir. 2009) (“A reference is anticipatory” if it
IPR2018-00571 Patent 9,531,473 B2
22
discloses “each and every element of the claimed invention, whether it does
so explicitly or inherently.”). With respect to anticipation, we agree that the
matrix switch and host units function together to disclose the claimed host
unit.
With respect to obviousness, we also agree with Petitioner that it
would have been obvious to place the functionality of both Wu’s matrix
switch and host units in a single unit. Pet. 89–90 (citing Ex. 1003 ¶ 289); In
re Larson, 340 F.2d 965, 968 (CCPA 1965) (“[U]se of a one piece
construction instead of the structure disclosed in [the prior art] would be
merely a matter of obvious engineering choice.”). In arguing that “the
correct way to group Wu’s components, if grouping were desirable” would
be with a host unit and the RTUs connected to it forming a group, Patent
Owner does not account for Wu’s teaching that these RTUs are, in fact,
remote transceiver units, and may frequently “lack wireless line-of-sight to
the base stations” and, in some embodiments, be ten kilometers away from
the base transceiver station or connected over a “[g]eographic [o]bstacle.”
Ex. 1011 ¶¶ 4, 33, Fig. 1. We are not persuaded that there is only one
“correct way” to group components, or that if there were, it would be to
group host units and remote antennae. We agree with Petitioner that it
would have been obvious to place the functionality of the matrix switch and
host units within a single unit.
(2) the “capable of sending” limitation and the “configurable to transmit” limitation
Patent Owner argues that, even considering the matrix switch and host
units of Wu together, Wu’s matrix switch routes signals to Wu’s host units,
each of which “is only capable of forwarding signals to its connected remote
units, not to any specific remote unit.” PO Resp. 55; PO Sur-Reply 22–23;
IPR2018-00571 Patent 9,531,473 B2
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Tr. 54:8–58:4. Patent Owner describes Wu’s system as providing
“incremental improvement in flexibility” but argues that “it lacks the
flexibility to precisely distribute different groups of signals to specific
remote antennas.” PO Resp. 21. This line of argument is based on Patent
Owner’s claim construction position that the “capable of sending” limitation
requires signals to be sent only to one specific remote unit, which we have
rejected. Instead, we are persuaded by Petitioner’s showing that Wu’s
matrix switch allows individual carrier channels to be routed, via host units,
to specific connected remote units. Pet. 80–81 (citing Ex. 1011 ¶¶ 9, 11, 30,
38–47, 54). While “sending a digital representation of any downlink signal
. . . to any of the plurality of remote units” may, in the case in which
multiple remote units are connected to one of Wu’s host units, mean that all
such remote units receive the downlink signal, as discussed supra at Section
II.C.2, this is consistent with the “capable of sending” limitation.
Similarly, Patent Owner concedes, with respect to the “configurable to
transmit” limitation, that Wu’s matrix switch can route channels to different
host units, but argues that “no component within the Wu system is capable
of specifying a specific RTU to receive a particular signal.” PO Resp. 57.
However, again, we are not persuaded that claim 11 requires specifying only
one remote unit receive a particular signal, and thus this argument does not
rebut Petitioner’s showing.
c. Single-reference Obviousness – Claim 11
While Petitioner and Patent Owner largely address anticipation and
obviousness with the same arguments, as discussed in the Institution
Decision, “though anticipation is the epitome of obviousness, [they] are
separate and distinct concepts.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed.
IPR2018-00571 Patent 9,531,473 B2
24
Cir. 1984) (quoted in Inst. Dec. 38.); Inst. Dec. 38–39. Single reference
obviousness requires a showing of motivation to modify a reference when a
party argues that such a modification must be made to meet the limitations
of a claim. Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878
F.3d 1336, 1346 (Fed. Cir. 2018). Here, no such modification is proposed.
With the exception of the argument relating to the grouping of Wu’s
matrix switch and host units, addressed above, Petitioner makes no
additional arguments relating to the obviousness grounds, as distinct from
the anticipation grounds.
d. Conclusion – claims 6 and 11
With respect to independent claim 6, Petitioner persuasively relies on
its arguments relating to claim 11, noting that independent claim 6 is
“subsumed” by claim 11 because the system of claim 11 comprises a host
unit as in claim 6, along with a plurality of remote units. Pet. 16–17, 75.
Patent Owner also addresses claims 6 and 11 jointly. PO Resp. 54–58.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that Wu anticipates claims
6 and 11, and that claims 6 and 11 would have been obvious over Wu.
3. Claims 7, 8, 12, and 13
Claims 7 and 12 each specify that “each downlink signal in the
plurality of downlink signals comprises a signal from a mobile telephone
carrier.” Petitioner argues that Wu’s disclosure of the use of the system by
“wireless carriers” to transport “voice” signals discloses the claimed
downlink signals comprising “a signal from a mobile telephone carrier.”
Pet. 83–84 (citing Ex. 1011 ¶ 3; Ex. 1003 ¶¶ 281–282).
IPR2018-00571 Patent 9,531,473 B2
25
With respect to claims 8 and 13, which each specify that “the at least
one interface to communicatively couple the host unit to a plurality of
remote units comprises an optical interface,” Petitioner argues that the links
between the RTUs in Wu and the host units 230 are described as optical
fiber links, with the RTUs disclosed as including optical converters. Id. at
84 (citing Ex. 1011 ¶¶ 4, 30, 33, 51, Figs. 1, 6-1, 7-1; Ex. 1003 ¶ 283).
In the Institution Decision, we found that Petitioner made a sufficient
showing with respect to the added limitations of these claims. Inst. Dec. 38.
Patent Owner does not respond to this preliminary determination and does
not present separate arguments for these claims. After further consideration,
and based on the summary above, the record supports this preliminary
determination by a preponderance of evidence.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that Wu anticipates claims
7, 8, 12, and 13, and that claims 7, 8, 12, and 13 would have been obvious
over Wu.
4. Claim 19
Claims 18 through 20 depend from claim 11 and relate to the
connections between the host unit and the claimed plurality of remote units.
We address claim 19 first, and claims 18 and 20 in the next subsection.
Claim 19, dependent on claim 11, adds the further limitation that “the
host unit is connected to each of the plurality of remote units through an
indirect connection.” Petitioner persuasively shows that Wu discloses a
cascade configuration, in which some RTUs are not directly connected to a
host unit, but rather are connected via another RTU. Pet. 86–87 (citing Ex.
1011 ¶¶ 12, 51, Figs. 1, 4, 5–1; Ex. 1003 ¶ 286).
IPR2018-00571 Patent 9,531,473 B2
26
In response to the Petition and Institution Decision, Patent Owner
argues that, as claim 19 requires that each of the remote units must be
connected indirectly, the limitation cannot be disclosed in the portion of Wu
referred to by Petitioner, in which indirect connections for some RTUs are
provided through an intermediate RTU. PO Resp. 59 (citing Ex. 1011 ¶ 12;
Ex. 2007 ¶ 157). The intermediate RTU, Patent Owner argues, is directly
connected to the host unit, and this does not teach or suggest “each of the
plurality of remote units” is connected through an indirect connection. Id.
In response, Petitioner argues that while claim 19 requires that “each
of the plurality of remote units” be indirectly connected, that claimed
plurality can be disclosed by any two remote units in the system, regardless
of the presence of additional remote units. Pet. Reply 16, 24.
Claim 11 uses open-ended “comprising” language, “which is
generally understood to signify that the claims do not exclude the presence
in the accused apparatus of factors in addition to those explicitly recited.”
Vivid Techs., 200 F.3d at 811. The remote units referred to by Petitioner,
connected to Wu’s host units via other RTUs, meet all requirements of
remote units in claim 11, and Figure 1 shows a plurality of such indirectly
connected RTUs, disclosing the additional limitation of claim 19. The
presence of additional RTUs, in the absence of any language excluding such
additional remote devices in the claim, does not contradict Petitioner’s
showing that Wu discloses the claim limitation.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that Wu anticipates claim
19, and that claim 19 would have been obvious over Wu.
IPR2018-00571 Patent 9,531,473 B2
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5. Claims 18 and 20
Claim 18, dependent on claim 11, adds the further limitation that “the
host unit is connected to each of the plurality of remote units through a
direct connection.” Claim 20, also dependent on claim 11, adds the
limitation that “the host unit is connected to some of the plurality of remote
units through a direct connection and others of the plurality of remote units
through an indirect connection.”
Petitioner persuasively argues that Wu discloses a plurality of remote
units that are directly connected to a host unit, and a plurality that are
connected via another RTU. Pet. 84–86, 88 (citing Ex. 1011, Figs. 1, 4, 5–1;
Ex. 1003 ¶¶ 284–285, 287).
Patent Owner presents no additional arguments relating to these
dependent claims. As discussed above, because of the open “comprising”
language used in claim 11, the presence of additional remote units not
included in the claimed “plurality of remote units” is not excluded. We
agree with Petitioner that the remote units shown in Wu’s Figure 1 disclose
these claim limitations.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that Wu anticipates claims
18 and 20, and that claims 18 and 20 would have been obvious over Wu.
6. Claim 21
Claim 21, dependent on claim 11, adds the further limitation that
“each remote comprises at least one interface to communicatively couple the
remote unit to another remote unit in a daisy-chain configuration.”
Petitioner persuasively argues that Wu’s cascade configuration, in which
some RTUs are not directly connected to a host unit, but rather are
IPR2018-00571 Patent 9,531,473 B2
28
connected via another RTU, discloses this configuration. Pet. 88 (citing Ex.
1011 ¶¶ 12, 51, Figs. 1, 4, 5–1; Ex. 1003 ¶ 288).
Patent Owner argues that the cascade configuration shown in Wu does
not disclose the claimed daisy-chain configuration because in the cascade
configuration there is no ability to send specific downlink signals to specific
remotes. PO Resp. 58 (citing Ex. 1011 ¶¶ 12, 51; Ex. 2007 ¶¶ 35, 158); PO
Sur-Reply 23–24; Tr. 58:5–59:4. Patent Owner argues that Wu’s disclosed
cascade configuration does not anticipate the claimed configuration because
in it, a host unit will “forward all signals received by the host unit to all
connected remote units.” Id. Again, this argument is based on Patent
Owner’s argument that the claim must be construed to permit a downlink
signal be transmitted to only a single remote unit, which we have rejected.
See supra § II.C.2.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that Wu anticipates claim
21, and that claim 21 would have been obvious over Wu.
E. Asserted Obviousness Based on Wu, or based on Wu and Sabat
Petitioner asserts claims 9, 10, and 14–17 would have been obvious
over Wu alone, or over Wu and Sabat. Pet. 90–93. Patent Owner addresses
these assertions in Patent Owner’s Response. PO Resp. 35–36, 59–61.
1. Overview of Sabat
Sabat is titled “Digital Distributed Antenna System” and describes a
system that distributes the capacity of a digital base station to solve coverage
and capacity requirements. Ex. 1008, [54], [57]. Sabat includes a block
schematic drawing of a system according to an embodiment of the invention
in Figure 3, reproduced below.
IPR2018-00571 Patent 9,531,473 B2
29
Figure 3 of Sabat illustrates a DAS network which distributes
downlink signals from base station 302 (labeled “Host Digital Base Station”
in Fig. 3), to digital distributed radio (DDR) units 304 (each labeled “Digital
Remote Radio”) via DDR hub 310 (labeled “Simulcast, Delay Management
C&M Plane Aggregation”). Id. ¶¶ 25, 30, 31, 33, 34. Sabat discloses that
signals are also received from DDR units 304 and transmitted to base station
302. Id. ¶¶ 15, 16, 37.
IPR2018-00571 Patent 9,531,473 B2
30
Figure 6 of Sabat is reproduced immediately below:
Figure 6 is a block schematic drawing of a base station and a DDR
hub, which includes a digital switch to provide capacity reallocation
capability to the network. Id. ¶ 28. Figure 6 shows base station sectors 502
for sectors 1 through K, transmitting via DDR hub 510 to DDR units 504.
Id. ¶¶ 27, 28, 43–46. Element 508 of DDR hub 510 is a manual patch panel
or a fully-programmable electronic switch. Id. ¶¶ 46–47. In each case, the
simulcast of downlink signals of base station sectors 502 to DDR units 504
can be reconfigured from an initial capacity allocation based on the best a
priori information in case any sector becomes overloaded. Id. Sabat notes
that, “[a]ny single DDR 504 can be connected to any base station sector 502
with the only constraint being the maximum simulcast per sector that is
supported by the switched DDR Hub 510.” Id. ¶ 46.
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31
Sabat discloses that communications between the DDR hub 510 and
the DDR units 504, and between DDR hub 510 and sectors 502 may be
transmitted according to the CPRI standard. Id. ¶¶ 14, 31, 32, 34, 36–38,
Claim 8.
2. Petitioner’s Initial Showing
Petitioner asserts claims 9, 10, 14, and 16 would have been obvious
over Wu, or over a combination of Wu and Sabat. Pet. 90–92. Claims 9, 10,
14, and 16 require that the host unit is “capable of packetizing each digital
representation of an uplink signal,” and in the case of claims 10 and 16, that
the packetizing is “in compliance” with the CPRI standard.
Petitioner persuasively shows that, in light of Wu’s disclosure of
communication between a remote unit and host unit using CPRI, it would
have been obvious to use CPRI to communicate upstream signals between
the matrix switch and the base station. Pet. 90–91. Alternatively, Petitioner
persuasively argues that it would have been obvious to modify Wu to use a
digital CPRI link as taught by Sabat, between the matrix switch of Wu and
the multiband transceiver 260. Id. at 90–91. Petitioner persuasively avers
that Sabat’s disclosure of the communication of upstream signals from the
remote digital units to the base station using CPRI, discloses the host units
capability to packetize each digital representation of an uplink signal. Id. at
42–43 (citing Ex. 1008 ¶¶ 14, 31–32, 36; Ex. 1003 ¶¶ 232–233; Ex. 1010).
Petitioner admits that the matrix switch of Wu “preferably” operates
in the analog domain but asserts that this indicates a tacit acknowledgement
that it could operate in the digital domain, and persuasively argues that if the
matrix switch operated in the digital domain certain advantages would be
realized, such as noise immunity and longer-distance transport. Id. at 91.
IPR2018-00571 Patent 9,531,473 B2
32
For the combination of Sabat with Wu, Petitioner persuasively shows
that the configuration would enable the use of a simple digital matrix switch
and capitalize on the known advantages of digital communications. Id. at 92
(citing Ex. 1003 ¶ 301).
3. Analysis of Parties’ Positions
In the Institution Decision, with respect to obviousness over Wu, we
noted that claims 9, 10, and 14–17 were not addressed in the anticipation
argument, and wrote that “thus, on this record, we do not see a sufficient
showing of obviousness over Wu for those claims.” Inst. Dec. 39.
With respect to Sabat’s teachings, we stated “[e]ven according to
Petitioner’s construction of packetizing (Pet. 12 (‘making packets’)), the use
of CPRI by the hub to communicate with the base station(s) does not appear
to be a complete argument with supporting evidence showing that the host
unit is ‘making packets’ of information received by the remote digital units.”
Inst. Dec. 23. We also instituted review with respect to all grounds, and
noted that our determination in the Institution Decision was not final. Id. at
40.
Patent Owner argues that “absent from Petitioner’s argument is any
evidence that Sabat’s use of the CPRI standard includes creating packets.”
PO Resp. 35 (citing Ex. 2007 ¶ 90; Pet. 42–43). Patent Owner admits that
“[o]n the uplink, Sabat states that the CPRI digital base station interface may
be used,” but argues that Sabat “instead describes” arithmetically summing
uplink signals, which would not teach the required packetization or
packetization in compliance with CPRI. Id. at 36 (citing Ex. 1008 ¶¶ 12, 36;
Ex. 2007 ¶ 91). Patent Owner then concludes that “Sabat’s DDR hub is
sending an arithmetically summed signal, not a packet as required by the
IPR2018-00571 Patent 9,531,473 B2
33
claims.” Id. Patent Owner argues that the communication of RF signals (as
in Sabat, see, e.g., Ex. 1008, [57], ¶¶ 3, 51) is performed as CPRI’s IQ data,
for which the CPRI standard does not describe addressing, leaving it to the
application layer, which is beyond the scope of the CPRI standard. PO Sur-
Reply 15–16 (citing Ex. 1010, 15, 26, 38, 84); Tr. 36:6–9, 36:14–22, 40:9–
10. At oral argument, Patent Owner confirmed that its argument is that this
uplink data from the remote units, if sent via CPRI, does not necessarily
include source or destination information. Tr. 41:18–26.
Petitioner responds, echoing Patent Owner’s admission, that “Sabat
discloses that the DDR hub uses a specific digital base station interface to
the digital base stations. That interface is the CPRI interface.” Pet. Reply
10 (internal citations omitted) (citing Ex. 1008 ¶¶ 31–32; Ex. 1010).
Petitioner cites the organization of incoming signals in the form of frames
from the remote units which are sent over using a CPRI interface to show
packetizing the transmission. Id. at 10–11.
Petitioner next argues that the use of the CPRI interface to transmit
these organized signals from the host unit to a base station shows the
creation of units of data to be sent over a network, as CPRI “defines a
specific protocol for mapping and framing the IQ data into defined CPRI
frames.” Id. at 11 (citing Ex. 1047 ¶¶ 9–11, 19). Petitioner argues that the
CPRI protocol discloses the use of destination addresses. Id. (citing Ex.
1047 ¶¶ 12–15, 20–22; Ex. 1010, 84).
Patent Owner responds that Petitioner conflates two portions of the
CPRI standard that deal with different communications, and that the portion
which relates to control and management messaging is the only one which
explicitly teaches addressing. PO Sur-Reply 15–16. Patent Owner also
IPR2018-00571 Patent 9,531,473 B2
34
argues that the other portion deals with the type of messaging that would be
used for RF signals, and that in this portion, the address table is handled by
an application layer, whose functions are outside the scope of the CPRI
standard. Id. at 16 (citing Ex. 1010, 15, 26–27, 38, 84).
As discussed previously, we agree with Patent Owner that
“packetizing” requires addressing (see supra Section II.C.1). We determine
that, using this construction, the record supports Petitioner’s position.
Sabat’s teaching of communications between a host unit and a base station
using CPRI, along with the CPRI specification’s discussion of the use of
destination addresses for certain data would have taught or suggested to one
of ordinary skill in the art that the host unit would frame data being
transmitted to the base station and address that data. See Ex. 1047 ¶¶ 12–15,
20–22; Ex. 1010, 84 (Sections 6.3.2–6.3.3); Ex. 2009, 63:16–65:10. CPRI
discusses including addresses in control and management data, and that an
application layer would provide address table information for RF signals.
Ex. 1010, 84. We are persuaded that artisans of ordinary skill would have
recognized that the CPRI standard provides for addresses. Even given
Patent Owner’s contention that the application layer is “beyond the scope of
the CPRI standard” (PO Sur-Reply 16 (citing Ex. 1010, 38)), one of ordinary
skill would have considered addressing of packets within the host unit, if not
at the CPRI Release 1 or 2 layer, to be obvious, so that packets arrive at their
intended destination.
Based on the foregoing discussion and a review of the record,
Petitioner shows by a preponderance of evidence that claims 9, 10, 14, and
16 would have been obvious over a combination of Wu and Sabat.
IPR2018-00571 Patent 9,531,473 B2
35
For claims 15 and 17, which depend from claims 14 and 16
respectively, Patent Owner relies upon its arguments relating to claims 9, 10,
14, and 16, and upon its arguments, discussed supra, relating to daisy
chaining. PO Resp. 61. Based on the foregoing discussion and a review of
the record, Petitioner shows by a preponderance of evidence that the claims
15 and 17 would have been obvious over a combination of Wu and Sabat.
F. Other Asserted Grounds
For the reasons discussed above, we determine that Petitioner has
shown by a preponderance of the evidence that all challenged claims are
unpatentable based on Wu (claims 6–8, 11–13, and 18–21) and the Wu-
Sabat combination (claims 9, 10, and 14–17). Accordingly, our decision is
dispositive with respect to the challenged claims and we do not reach the
additional issues of whether Petitioner has shown by a preponderance of the
evidence that any of the claims are also unpatentable based on the additional
grounds asserted in the Petition.
G. Petitioner’s Motion to Exclude Certain Testimony of Dr. Acampora
Patent Owner filed a Motion to Exclude (Paper 43, “PO Mot. Excl.”),
Petitioner filed a Response (Paper 46, “Pet Resp. Excl.”), and Patent Owner
filed a Reply (Paper 47, “Pet. Reply Excl.”). For the reasons discussed
below, Patent Owner’s Motion to Exclude is dismissed-in-part and denied-
in-part.
Patent Owner argues that we should exclude Dr. Acampora’s re-direct
testimony during his deposition, and a supplemental declaration by Dr.
Acampora (Ex. 1047) submitted with Petitioner’s Reply. PO Mot. Excl. 1.
IPR2018-00571 Patent 9,531,473 B2
36
We have not relied on Dr. Acampora’s re-direct in this Decision.
Therefore, Patent Owner’s Motion to Exclude is dismissed as moot with
respect to Dr. Acampora’s redirect testimony.
Patent Owner further argues that Dr. Acampora’s supplemental
declaration should be excluded, as it presents new invalidity theories and
testimony, includes evidence inadmissible under the Federal Rules of
Evidence, discusses legal standards or conclusions, and is new, belatedly
presented evidence. PO Mot. Excl. 10–14.
With respect to the alleged inclusion of new theories and evidence,
and to the supplemental declaration as new, belatedly presented evidence,
we are not persuaded that the discussion of the CPRI document (Ex. 1010)
explaining the combination of art asserted in the Petition is impermissible
new evidence or argument. In its Response, Patent Owner contends the
construction of “packetizing” requires source or destination information to
be included with the data to be transmitted. PO Resp. 14–15. As Petitioner
argues, Dr. Acampora’s declaration relates to this construction, and to the
consideration of the Petition’s theories of unpatentability if we were to adopt
it. Pet. Resp. Excl. 5–6. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1080–82 (Fed. Cir. 2015) (holding that rebuttal evidence may be appropriate
when needed to explain, repel, counteract, or disprove an adversary’s
evidence); see also Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81
(Fed. Cir. 2018) (holding that an IPR petitioner “may introduce new
evidence after the petition stage” in some circumstances such as
documenting knowledge skilled artisans would bring in interpreting the prior
art); see also 37 C.F.R. § 42.23(b) (stating “reply may only respond to
IPR2018-00571 Patent 9,531,473 B2
37
arguments raised in the corresponding . . . patent owner response”). The
Motion to Exclude is denied with respect to this subject matter.
To the extent Patent Owner argues that Dr. Acampora’s supplemental
declaration improperly includes assertions about positions taken in litigation
(asserted to be inadmissible under Federal Rule of Evidence 602) or
testimony regarding legal matters for which he has not been qualified as an
expert (asserted to be inadmissible under Federal Rule of Evidence 702(a)),
we have not relied upon these elements of Dr. Acampora’s supplemental
declaration, and thus the Motion to Exclude is moot with respect to these
arguments. See PO Mot. Excl. 11. Patent Owner invokes other Federal
Rules of Evidence, but sets forth no argument as to why the evidence should
be excluded under the additional cited rules; accordingly, the Motion to
Exclude is denied with respect to these arguments. See id.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
6–8, 11–13, and 18–21 of the ’473 patent are unpatentable as anticipated by
and obvious over Wu, and that claims 9, 10, and 14–17 of the ’473 patent
are unpatentable as obvious over Wu and Sabat.
We dismiss in part as moot and deny in part Petitioner’s Motion to
Exclude.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 6–21 of the ’310 patent are unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed in part as moot, and denied in part; and
IPR2018-00571 Patent 9,531,473 B2
38
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2018-00571 Patent 9,531,473 B2
39
PETITIONER:
Philip Caspers Samuel Hamer Matthew Goggin CARLSON CASPERS VANDENBURGH LINDQUIST & SCHUMAN [email protected] [email protected] [email protected]
PATENT OWNER:
Case L. Collard Gina Cornelio DORSEY & WHITNEY LLP [email protected] [email protected]